1
TECHNOLOGY TRANSFER AGREEMENT
BETWEEN
OCTEL COMMUNICATIONS CORPORATION
AND
LUCENT TECHNOLOGIES GRL CORPORATION
AND
BROOKTROUT TECHNOLOGY, INC.
RELATED TO CTP BOARD PRODUCTS
2
TECHNOLOGY TRANSFER AGREEMENT
TABLE OF CONTENTS
ARTICLE 1 - ASSIGNMENT OF PATENTS TO BUYER
1.01 Assignment
1.02 Recording Fees
ARTICLE 2 - ASSIGNMENT OF TECHNICAL INFORMATION TO BUYER
2.01 Assignment of Assigned Technical Information
2.02 When Furnished
2.03 Past Infringement
ARTICLE 3 - TRANSFER OF LICENSED INFORMATION AND LICENSE OF INTELLECTUAL
PROPERTY
3.01 Information Furnished
3.02 U.S. Export Control
3.03 Grant of Intellectual Property Licenses
3.04 Procurement
3.05 Right to Sublicense Subsidiaries
3.06 Training and Services
ARTICLE 4 - MISCELLANEOUS PROVISIONS
4.01 Agreement Prevails
4.02 Accuracy
4.03 Nothing Construed
4.04 Disclaimer
4.05 Duties of BUYER and OCTEL
4.06 Confidentiality
4.07 Addresses
4.08 Integration
4.09 Nonassignability
4.10 Choice of Law
4.11 Dispute Resolution
4.12 Counterparts
DEFINITIONS APPENDIX
APPENDIX A
APPENDIX B
APPENDIX C
2
3
TECHNOLOGY TRANSFER AGREEMENT
TECHNOLOGY TRANSFER AGREEMENT, dated as of the Effective Date, by and among
OCTEL COMMUNICATIONS CORPORATION, a Delaware corporation ("OCTEL"), having an
office at 000 Xxxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000, and LUCENT
TECHNOLOGIES GRL CORPORATION ("LUCENT GRL"), a Delaware corporation having
offices at 00000 X.X. 00xx Xxxxxx, Xxxxx Xxxxx, Xxxxxxx 00000, and BROOKTROUT
TECHNOLOGY, INC., a Delaware corporation ("BUYER"), having offices at 000 Xxxxx
Xxxxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000-0000.0*
ARTICLE 1
ASSIGNMENT OF PATENTS TO BUYER
1.01 ASSIGNMENT
(a) OCTEL hereby assigns to BUYER U.S. Patents 5,319,703 and 5,321,745, and
any reissues, re-examinations, and corresponding counterpart foreign patent
applications and foreign patents issuing thereon, subject to (1) all prior
agreements of OCTEL and its Subsidiaries and Affiliates to third parties entered
into prior to the date of the Asset Purchase Agreement, and (2) OCTEL and its
Subsidiaries and Affiliates retaining a personal, non-exclusive,
non-transferable, irrevocable, worldwide, royalty-free license (without any
right to sublicense) under such patents for all products and services. OCTEL
hereby assigns to BUYER all rights under such patent to xxx for damages for past
infringement. OCTEL hereby grants to BUYER a personal (subject to Section 4.08),
nonexclusive, worldwide, royalty-free paid-up license, under any patent owned by
OCTEL as of the Closing Date and issued on a patent application which claims
priority from U.S. Patent 5,319,703 or 5,321,745, to make, have made, use, offer
to sell, sell and import all products.
(b) Upon reasonable requests from BUYER identifying a third party, OCTEL will
use reasonable efforts to determine and respond to BUYER as to whether such
third party is licensed under the patents identified in Section 1.01(a).
1.02 RECORDING FEES
BUYER shall be responsible for any and all recording fees related to the
assignment of the patents from OCTEL to BUYER pursuant to Section 1.01 above.
OCTEL agrees to execute all documents required for the assignment of
----------------------------
*ANY TERM IN CAPITAL LETTERS WHICH IS DEFINED IN THE DEFINITIONS APPENDIX SHALL
HAVE THE MEANING SPECIFIED THEREIN.
3
4
ARTICLE 2
ASSIGNMENT OF TECHNICAL INFORMATION TO BUYER
such patents to BUYER.
2.01 ASSIGNMENT OF ASSIGNED TECHNICAL INFORMATION
(a) OCTEL hereby assigns to BUYER the Assigned Technical Information, together
with all copyrights thereon, subject to all prior written agreements of OCTEL
and its Subsidiaries and Affiliates to third parties entered into prior to the
date of the Asset Purchase Agreement. Such assignment is made subject to OCTEL
and its Subsidiaries and Affiliates retaining a non-exclusive, irrevocable,
worldwide, royalty-free license to use (and to prepare and use Derivative Works
from) the Hardware and DSP Algorithms (identified in Appendix A) of the Assigned
Technical Information, and any copyrights therein. Such license shall not
include the right to use such Assigned Technical Information to make, market, or
sell board products having features substantially the same as features of the
current products of the Business or products under development by the Business
as of the Closing Date. Nothing in the preceding sentence shall preclude OCTEL
and its Subsidiaries and Affiliates from making semiconductor integrated circuit
products.
(b) The license granted to OCTEL and its Subsidiaries and Affiliates under
Section 2.01(a) shall include a limited right to sublicense the DSP Algorithms
in source code (human readable) form to OCTEL's and its Subsidiaries' and
Affiliates' customers, where such source code is provided as an integral portion
of substantially all of the source code for the product provided to that
customer. Such sublicense shall be limited to use by the customer to maintain or
modify the source code for solely for use in connection with such product.
2.02 WHEN FURNISHED
OCTEL shall furnish to BUYER the Assigned Technical Information, as listed on
Exhibit A, on the Closing Date.
2.03 PAST INFRINGEMENT
OCTEL hereby assigns to BUYER all rights to xxx for damages for past
infringement or misappropriation of the Assigned Technical Information.
4
5
ARTICLE 3
TRANSFER OF LICENSED INFORMATION
AND LICENSE OF INTELLECTUAL PROPERTY
3.01 INFORMATION FURNISHED
Licensed Technical Information constituting technical informative material
regarding CTP Board Products as set forth in Appendix B will be furnished within
thirty (30) days of execution of this Agreement and its shall be deemed received
upon receipt by BUYER from OCTEL.
3.02 U.S. EXPORT CONTROL
BUYER hereby assures OCTEL that it will not without a license or license
exception authorized by the Bureau of Export Administration of the U.S.
Department of Commerce, Xxxxxxxxxx, X.X. 00000, Xxxxxx Xxxxxx of America, if
required under applicable rules in effect at the time:
(i) export or release the information or software (including source
code) obtained pursuant to this Agreement to a national of Country
Groups D:1 or E:2 (15 C.F.R. Part 740, Supp. 1), Iran, Iraq,
Sudan, or Syria;
(ii) export to Country Groups D:1 or E:2, or to Iran, Iraq, Sudan, or
Syria, the direct product (including processes and services) of
the information or software; or
(iii) if the direct product of the information is a complete plant or
any major component of a plant, export to Country Groups D:1 or
E:2, or to Iran, Iraq, Sudan, or Syria, the direct product of the
plant or major component.
This assurance will be honored even after the expiration date of this Agreement.
3.03 GRANT OF INTELLECTUAL PROPERTY LICENSES
(a) OCTEL grants to BUYER a personal (subject to Section 4.08) and non-
exclusive right to use the Licensed Technical Information to make, use, offer to
sell, sell, rent and otherwise distribute, and import CTP Board Products, and of
maintenance parts therefor. Subject to the provisions of Section 3.02, such
products and maintenance parts may be sold by BUYER worldwide to any
5
6
customer. The rights granted to BUYER under this Section 3.03(a) shall include a
limited right to sublicense the Licensed Technical Information in source code
(human readable) form to BUYER's customers, where such source code is provided
as an integral portion of substantially all of the source code for a discrete
software component of a CTP Board Product, which software component also
contains substantial source code of BUYER. Such sublicense shall be limited to
use by the customer to maintain or modify the source code for solely for use in
connection with CTP Board Products.
(b) LUCENT GRL grants to BUYER a personal (subject to Section 4.08), and
nonexclusive right, under LUCENT GRL's Patents, to make, have made, use, offer
to sell, sell and import CTP Board Products. This license will terminate upon
BUYER becoming a party to a suit brought against LUCENT GRL or its Subsidiaries
or Affiliates alleging infringement of a patent owned or controlled by BUYER,
relating to (1) CTP Board Products or similar products or (2) systems
incorporating CTP Board Products or similar products.
(c) LUCENT GRL further grants to BUYER a sublicense under those patent license
rights granted to LUCENT GRL by any third party pursuant to any license
agreement conferring similar rights between such third party and LUCENT GRL
existing as of the Closing Date, but only to the extent that LUCENT GRL has a
right to grant such a sublicense and provided that LUCENT GRL shall not be
obligated to pay any consideration for such sublicense.
(d) OCTEL grants to BUYER a personal (subject to Section 4.08), and non-
exclusive license, under the OCTEL patents listed in Appendix C to make, have
made, use, sell or offer for sale CTP Board Products after the effective date of
this Agreement.
(e) OCTEL hereby covenants not to xxx BUYER or any customer of BUYER for
infringement of the OCTEL patents listed in Appendix C arising from BUYER's or
such customer's manufacture, sale, offer for sale, or use of Systems, but only
to the extent that CTP Board Products are involved in the functions or features
which give rise to the infringement. This covenant not to xxx shall be binding
on any subsequent assignee of the patents listed in Appendix C, and shall be
enforceable by BUYER's customers. This covenant not to xxx shall not apply with
respect to infringement by such Systems arising from the use of products similar
to CTP Board Products that are manufactured by third parties. This covenant not
to xxx shall not apply to claims of infringement of any patent that is the
subject of any separate license agreement between such customer and OCTEL or its
Subsidiaries or Affiliates. This covenant not to xxx will terminate, and OCTEL
will be entitled to xxx such
6
7
customer for post-termination infringement of the OCTEL patents listed in
Appendix C, if that customer becomes a party to a lawsuit against OCTEL alleging
that OCTEL or its Subsidiaries or Affiliates infringes any patent or alleging
that any of the OCTEL patents in Appendix C are invalid or unenforceable. As
used in this paragraph (e), the term "customer of BUYER" shall include OEM
manufacturers of BUYER or its customers, BUYER's distributors and resellers, and
end users of CTP Board Products.
(f) The licenses granted under this Agreement shall be deemed perpetual,
paid-up, and royalty-free upon and subject to payment of the purchase price
specified in the Asset Purchase Agreement.
3.04 PROCUREMENT
(a) OCTEL grants to BUYER a personal and nonexclusive right, as an attribute
of the right granted in Section 3.03, to disclose to any supplier or prospective
supplier only those portions of the Licensed Technical Information which are
necessary for the procurement by BUYER of any components necessary to complete
manufacture of CTP Board Products.
(b) BUYER agrees that it will not make any part of the Licensed Technical
Information available to any such supplier or prospective supplier except on the
agreement in writing (of which a copy will be furnished to OCTEL promptly upon
its request) of such supplier or prospective supplier that it accepts as its own
BUYER's commitments under Section 3.02 and the confidentiality obligations of
Section 4.05(a)(ii), that it will use all information received from BUYER only
for the purpose of supplying to BUYER items of the type to be procured by BUYER
pursuant to Section 3.04(a), that it will promptly return or destroy each and
every part of such information as directed by BUYER.
3.05 RIGHT TO SUBLICENSE SUBSIDIARIES
The grant of each license to BUYER under Article 3 includes the right to grant
sublicenses within the scope of such license to BUYER's Subsidiaries, but such
sublicenses will continue only for so long as they remain its Subsidiaries.
3.06 TRAINING AND SERVICES
OCTEL and BUYER do not contemplate the provision under this Agreement of
assistance or training services in any country. Any such assistance or training
services to be provided will be the subject of a separate agreement between the
appropriate parties.
7
8
ARTICLE 4
MISCELLANEOUS PROVISIONS
4.01 AGREEMENT PREVAILS
This Agreement shall prevail in the event of any conflicting terms or legends
that may appear on the Technical Information.
4.02 ACCURACY
OCTEL believes that the Technical Information is true and accurate, but OCTEL
and its Subsidiaries and Affiliates shall not be held to any liability for
errors or omissions therein.
4.03 NOTHING CONSTRUED
Neither the execution of this Agreement nor anything in it or in the Technical
Information shall be construed as:
(i) an obligation upon OCTEL or its SUBSIDIARIES or Affiliates to
furnish any person, including BUYER, any assistance of any kind
whatsoever, or any information other than the Technical
Information, or to revise, supplement or elaborate upon the
Technical Information; or
(ii) providing or implying any arrangement or understanding that OCTEL
or its Subsidiaries or Affiliates will make any purchase, lease,
examination or test or give any approval.
4.04 DISCLAIMER
OCTEL AND ITS SUBSIDIARIES AND AFFILIATES MAKE NO REPRESENTATIONS OR WARRANTIES,
EXPRESS OR IMPLIED. BY WAY OF EXAMPLE BUT NOT OF LIMITATION, OCTEL AND ITS
SUBSIDIARIES AND AFFILIATES MAKE NO REPRESENTATIONS OR WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE, OR THAT THE USE OF THE
TECHNICAL INFORMATION OR ANY OF IT WILL NOT INFRINGE ANY PATENT OR OTHER
INTELLECTUAL PROPERTY RIGHT. OCTEL AND ITS SUBSIDIARIES AND AFFILIATES SHALL NOT
BE HELD TO ANY LIABILITY WITH RESPECT TO ANY CLAIM BY BUYER OR ANY THIRD PARTY
ON ACCOUNT OF, OR ARISING FROM, THE USE OF THE TECHNICAL INFORMATION OR ANY OF
IT.
8
9
4.05 DUTIES OF BUYER AND OCTEL
(a) BUYER agrees:
(i) that BUYER will not use any Licensed Technical Information except
as authorized herein;
(ii) that BUYER will not, without OCTEL's express written permission,
make or have made, or permit to be made, more copies of any of the
furnished Licensed Technical Information than are necessary for its
use hereunder, and that each such copy shall contain the same
proprietary notices or legends which appear on the furnished
Licensed Technical Information;
(iii) that no right is granted herein to use any identification (such as,
but not limited to, trade names, trademarks, trade devices, service
marks or symbols, and abbreviations, contractions or simulations
thereof) owned by or used to identify OCTEL or any of its
Subsidiaries or Affiliates or any of its or their products,
services or organizations, and that BUYER agrees it will not,
without the prior written permission of OCTEL, (i) use any such
identification in advertising, publicity, packaging, labeling or in
any other manner to identify itself or any of its products,
services or organizations or (ii) represent directly or indirectly
that any product, service or organization of BUYER is a product,
service or organization of OCTEL or any of its Subsidiaries or
Affiliates, or that any product or service of BUYER is made in
accordance with or utilizes any information of OCTEL or any of its
Subsidiaries or Affiliates; and
(iv) that all Licensed Technical Information shall be deemed the
property of OCTEL.
(b) OCTEL agrees:
(i) that OCTEL will not use any Assigned Technical Information except
as authorized herein;
(ii) that OCTEL will not, without BUYER's express written permission,
make or have made, or permit to be made, more copies of any of
9
10
the furnished Assigned Technical Information than are necessary for
its use hereunder, and that each such copy shall contain the same
proprietary notices or legends which appear on the furnished
Assigned Technical Information; and
(iii) that no right is granted herein to use any identification (such as,
but not limited to, trade names, trademarks, trade devices, service
marks or symbols, and abbreviations, contractions or simulations
thereof) owned by or used to identify BUYER or any of its
Subsidiaries or Affiliates or any of its or their products,
services or organizations, and that OCTEL agrees it will not,
without the prior written permission of BUYER, (i) use any such
identification in advertising, publicity, packaging, labeling or in
any other manner to identify itself or any of its products,
services or organizations or (ii) represent directly or indirectly
that any product, service or organization of OCTEL is a product,
service or organization of BUYER or any of its Subsidiaries or
Affiliates, or that any product or service of OCTEL is made in
accordance with or utilizes any information of BUYER or any of its
Subsidiaries or Affiliates.
4.06 CONFIDENTIALITY
BUYER shall, except as expressly provided in this Agreement, hold all of the
Licensed Technical Information in confidence for OCTEL, and shall not make any
disclosure of any or all of such Licensed Technical Information to anyone,
except to employees who have a need to know and to any others to whom such
disclosure may be expressly authorized hereunder and is necessary to implement
the use for which rights are granted hereunder. OCTEL and its Subsidiaries and
Affiliates shall, except as expressly provided in this Agreement, hold all of
the Assigned Technical Information in confidence for BUYER, and shall not make
any disclosure of any or all of such Assigned Technical Information to anyone,
except to employees who have a need to know and to any others to whom such
disclosure may be expressly authorized hereunder and is necessary to implement
the use for which rights are granted hereunder. Each party shall appropriately
notify each person to whom any such disclosure is made that such disclosure is
made in confidence and shall be kept in confidence by such person. These
restrictions on the use or disclosure of Licensed Technical Information or
Assigned Technical Information, as the case may be, shall not apply to any such
information:
i. which is independently developed by the receiving party or lawfully
received free of restriction from another source having a
10
11
right to furnish such information; or
ii. after it has become generally available to the public without
breach of this Agreement by the receiving party; or
iii. which at the time of disclosure to the receiving party was known to
such party free of restriction as evidenced by documentation in
such party's possession; or
iv. which the disclosing party (i.e., the other party) agrees in
writing is free of such restrictions.
4.07 ADDRESSES
Any notice or other communication hereunder shall be sufficiently given to the
BUYER when sent by certified mail addressed to 000 Xxxxx Xxxxxx, Xxxxxxx,
Xxxxxxxxxxxxx 00000-0000, or to OCTEL when sent by certified mail addressed to
c/o Contract Administrator, Lucent Technologies, Inc., 000 Xxxxx Xxxx, Xxxxxxx
Xxxxxx, Xxx Xxxxxx 00000, Xxxxxx Xxxxxx of America, or to LUCENT GRL when sent
by certified mail addressed to Contract Administrator, Intellectual Property
Organization, Lucent Technologies, Inc., Suite 105, 00000 X.X. 00xx Xxxxxx,
Xxxxx Xxxxx, Xxxxxxx 00000. Changes in such addresses may be specified by
written notice.
4.08 INTEGRATION
This Agreement, together with the Asset Purchase Agreement (and the other
related agreements set forth therein), sets forth the entire agreement and
understanding between the parties as to the subject matter hereof and merges all
prior discussions between them. None of the parties shall be bound by any
warranties, understandings, modifications, or representations with respect to
such subject matter other than as expressly provided herein, in prior written
agreements, or in a writing signed with or subsequent to the execution hereof by
an authorized representative of the party to be bound thereby.
4.09 NONASSIGNABILITY
BUYER will have the right to assign its licenses, rights and obligations in this
Agreement to the purchaser of substantially all of the assets of the Business,
or pursuant to a merger, or to the purchaser of all or substantially all of the
assets of BUYER, provided that the assignee agrees in writing to be bound by the
terms of this Agreement. In addition, all of Buyer's rights and interest in this
Agreement
11
12
and any licenses and rights granted to it hereunder may be assigned to any
Subsidiary or Affiliate of BUYER as the result of any internal reorganization of
Brooktrout Technology, Inc., which successor shall thereafter be deemed
substituted for BUYER as the party hereto, effective upon such assignment.
Except as expressly provided above, neither this Agreement nor any licenses or
rights hereunder shall be otherwise assignable or transferable (in insolvency
proceedings, by reason of a corporate merger, or otherwise) by BUYER without the
express written consent of OCTEL and/or LUCENT GRL, as appropriate.
4.10 CHOICE OF LAW
The parties are familiar with the principles of New York commercial law, and
desire and agree that the law of New York shall apply in any dispute arising
with respect to this Agreement, exclusive of its conflicts of law provisions.
4.11 DISPUTE RESOLUTION
If a dispute arises out of or relates to this Agreement, the Parties agree to
resolve such dispute in accordance with Section 8.11 of the Asset Purchase
Agreement; provided, however, for the purposes of this Agreement, any award made
relating to patents (i) shall be a bare award limited to a holding for or
against a party and affording such remedy as is deemed equitable, just and
within the scope of this Agreement; and (ii) shall be without findings as to
issues (including but not limited to patent validity and/or infringement) or a
statement of the reasoning on which the award rests. Notwithstanding the
foregoing, any action for an injunction or other equitable relief arising out of
the actions of any of the parties under the licenses or other rights conferred
under this Agreement may be brought in the New York Supreme Court in the Borough
of Manhattan, City of New York, New York, or in the Federal District Court for
the Southern District of New York.
4.12 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.
12
13
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be executed
in duplicate originals by its duly authorized representative on the respective
dates entered below.
OCTEL COMMUNICATIONS CORPORATION
/s/ Xxxxxxx X. Xxxxxxx
By _________________________________________________
Xxxxxxx X. Xxxxxxx
Chief Operating Officer, Octel Messaging Division
December 17, 1998
Date _______________________________________________
LUCENT TECHNOLOGIES GRL CORPORATION
/s/ Xxxxxxx X. Xxxxxx
By _________________________________________________
Xxxxxxx X. Xxxxxx
Chairman of the Board of Directors
December 17, 1998
Date _______________________________________________
BROOKTROUT TECHNOLOGY, INC.
/s/ Xxxxxx X. Xxxxx
By _________________________________________________
Xxxxxx X. Xxxxx
Name _______________________________________________
Vice President
Title ______________________________________________
December 17, 1998
Date _______________________________________________
THIS AGREEMENT DOES NOT BIND OR OBLIGATE ANY PARTY IN ANY MANNER
UNLESS DULY EXECUTED BY AUTHORIZED REPRESENTATIVES OF ALL PARTIES.
13
14
DEFINITIONS APPENDIX
AFFILIATE of any Person means any Person, directly or indirectly controlled by,
controlling or under common control with, such Person. For purposes of this
Agreement, "control" means the power to direct the management and policies of a
Person, whether through the ownership of voting securities, by agreement or
otherwise.
ASSET PURCHASE AGREEMENT means the Agreement for the Purchase and Sale of Assets
by and among BGTP, Inc., Brooktrout Technology Europe Limited, Brooktrout
Technology, Inc., Octel Communications Corporation, and Rhetorex Europe Limited,
which the Parties dated as of December 17, 1998.
ASSIGNED TECHNICAL INFORMATION means the technical information, data and
documents of whatever kind in whatever medium, including trade secrets,
drawings, and specifications, including the underlying copyright in works of
authorship embodying the foregoing, which (1) are owned by OCTEL as of the
Closing Date, and (2) are listed in Exhibit A or were developed by the Business
prior to the Closing Date.
THE BUSINESS means the business of the Lucent Computer Telephony Products Group.
CTP BOARD PRODUCT means hardware and/or software products the principal
functionality of which is equivalent to the functionality of any of the current
products of the Business, or products under development by the Business, as of
the Closing Date.
DERIVATIVE WORK shall mean any work that is based, in whole or in part, upon one
or more pre-existing works, such as a revision, modification, translation,
abridgment, condensation, expansion or any other form in which such pre-existing
works may be recast, transformed or adopted and which, if prepared without
authorization of the owner of the copyright in such pre-existing work, would
constitute a copyright infringement. For purposes of this Agreement, a
Derivative Work shall also include any compilation that incorporates such a
pre-existing work.
EFFECTIVE DATE means the Closing Date of the Asset Purchase Agreement.
LICENSED TECHNICAL INFORMATION shall mean all software, technical information,
data and documents of whatever kind in whatever medium, including trade
14
15
secrets, drawings, and specifications, including the underlying copyright in
works of authorship embodying the foregoing, which are owned by OCTEL as of the
Closing Date and listed in Exhibit B.
LUCENT GRL'S PATENTS shall mean every patent (1) owned by Lucent Technologies
Inc., and (2) issued on an application filed as of the Closing Date in any
country of the world, which LUCENT GRL has a right to license as of the date of
execution of this Agreement.
PERSON means any individual, corporation, partnership, firm, association, joint
venture, joint stock company, trust, unincorporated organization or other
entity, or any government or regulatory, administrative or political subdivision
or agency, department or instrumentality thereof.
SUBSIDIARY of any Person means any Person (i) the majority of whose shares or
other securities entitled to vote for election of directors (or other managing
authority) is now or hereafter controlled by such company either directly or
indirectly; or (ii) which does not have outstanding shares or securities but the
majority of whose ownership interest representing the right to manage such
corporation or other legal entity is now or hereafter owned and controlled by
such company either directly or indirectly; but any such corporation or other
legal entity shall be deemed to be a Subsidiary of such company only as long as
such control or ownership and control exists.
SYSTEM means an assembled device consisting of hardware and software that: (i)
contains every element of at least one claim of one or more of the OCTEL patents
listed in Appendix B; (ii) includes at least one CTP Board Product manufactured
by BUYER, and (iii) incorporates the functions and features of BUYER's CTP Board
Product both physically and within the software code such that some or all of
such functions and features are actually utilized in such device.
TECHNICAL INFORMATION means the Assigned Technical Information and the Licensed
Technical Information, collectively.
15
16
Appendix A Assigned Technical Information
Appendix B Licensed Technical Information
Appendix C Octel's Patents
[THE APPENDICES LISTED ABOVE HAVE NOT BEEN FILED HEREIN. THE REGISTRANT AGREES
TO FURNISH SUPPLEMENTALLY A COPY OF ANY SUCH OMITTED ITEM TO THE SECURITIES AND
EXCHANGE COMMISSION UPON REQUEST.]
